What’s a Patent Again?

In order to pro­ceed fur­ther, we have to step back for a moment and revisit our explo­ration of patents; specif­i­cally, we need to look in more detail at what a patent actu­ally is.

And I don’t mean that in any philo­soph­i­cal sense; for this explo­ration is about under­stand­ing a patent in the same sense that you want to under­stand a fish that you’re about to eat: what are its parts; which of those parts taste good; and, of course, can we infer from all this inti­mate ichthy­olog­i­cal infor­ma­tion how to find other good fish to eat, so we’re not stuck eat­ing bot­tom­feed­ers ad infini­tum?

All The Parts

At the most fun­da­men­tal level a patent con­sists of two parts: the claims; and, every­thing else. This dichotomy is eas­ily under­stood, in that the part of the patent that has direct legal effect is the claims, which define the scope of patent pro­tec­tion; all else is used in inter­pret­ing the claims.

The claims of the patent are found at the end; I once heard an amus­ing story told by an aca­d­e­mic researcher who was told to review a num­ber of patents relat­ing to her work before meet­ing with a num­ber of very rich investors, and how she duti­fully spent all night try­ing to read sev­eral hun­dred pages of patent jar­gon only to dis­cover that, when they said “read the patents,” what they actu­ally meant was “read the claims” — which are of course at the end of any patent doc­u­ment. So when read­ing a patent, the meaty part — the claims — is at the end.

So what do claims look like? Here’s a cooked-up example:

1. A fish com­pris­ing: a head; one or more gills; a body; one or more fins; and, a tail.

What this claim means is that we have a thing — in this case a fish — which has at least five ele­ments: 1) a “head” (what­ever that is); 2) at least one “gill” (what­ever that is); 3) a “body” (what­ever that is); 4) at least one “fin” (what­ever that is); and, 5) a “tail” (what­ever that is). In gen­eral the fact that the thing is called a “fish” doesn’t mean much of any­thing, this “pre­am­ble” part of the claim (that is, the part before the colon) is usu­ally just a place­holder for the actual def­i­n­i­tion that fol­lows, although in some unusual cases the pre­am­ble gets rolled into the def­i­n­i­tion of the claim.1

On the other hand, the use of the word “com­pris­ing” is very impor­tant — a claim using this word is con­sid­ered an “open” claim, since “com­pris­ing” means “the fol­low­ing list of ele­ments, but there could be more ele­ments than are just in the list.” So “A thing com­pris­ing ele­ments 1, 2 and 3″ could be a thing of just those three ele­ments, or a thing of more than those three ele­ments — that is, an open set. How­ever, a claim like “A thing con­sist­ing of ele­ments 1, 2 and 3″ can only refer to a thing with just those three ele­ments — this use of the major words “con­sist­ing of” results in what’s called a “closed” claim.2

Fine, pre­am­ble, open ver­sus closed. Got it? Now on to the delin­eated ele­ments them­selves — in the exam­ple claim there are five ele­ments, head, gill, body, fin, tail. These ele­ments are self-evident, right? We all know what a fish’s head, gill, body, fin and tail look like?

Well not nec­es­sar­ily. Blind cave fish may not have eyes, for exam­ple, so should “head” auto­mat­i­cally mean a head with eyes, with­out eyes, or both? All the specif­i­cally fishy bits are gen­er­ally clear — gills, fins, tail — but those fishy bits are very dif­fer­ent in dif­fer­ent fishes,3 so what does the claim mean when it uses each of these terms?

And don’t even get me started on “body.” Clearly the claim is refer­ring to some sort of struc­tural mem­ber, but is it just a lump that the head, gills, fins and tail go into, sort of like the potato in Mr. Potato Head? Or does the body do other things? And even if it’s a Mr. Potato Head type of body, what’s the spa­tial arrange­ment in which the head, gills, fins and tail go into it?

I could go on (and, obvi­ously, on), but the above is prob­a­bly enough to give you more of a taste than you wanted of what it’s like to be a patent agent or attor­ney. And also — I hope — a sense of how the ele­ments of any par­tic­u­lar claim work. Specif­i­cally, they are words or com­bi­na­tions of words, that usu­ally have some sort of com­mon mean­ing, but that can be slip­pery enough in that mean­ing that there’s room for doubt in inter­pre­ta­tion — some­thing that should be avoided at all costs in a patent (unless of course you explic­itly want to leave wig­gle room, which is a strat­egy that I won’t dis­cuss now).

The way of clar­i­fy­ing the words is by means of the “spec­i­fi­ca­tion,” which is every­thing in the patent that isn’t the claims, and which com­monly includes the text and draw­ings (although draw­ings aren’t required in a patent doc­u­ment). So for exam­ple let’s say that we had the following:

1. A fish com­pris­ing: a head; one or more gills; a body; one or more fins; and, a tail.

… “Body,” as used herein, refers to the por­tion of the fish that is inter­me­di­ate between the head at the prox­i­mal end and the tail at the oppo­site dis­tal end, and that serves a num­ber of pur­poses, includ­ing act­ing as the point of attachment/integration of the gill(s) and fin(s). Fish bod­ies may be rounded or flat (e.g., for the flat-fishes such as the floun­der), they may be cov­ered with scales of var­i­ous types and com­po­si­tions, mucous, etc. Exam­ples of var­i­ous bod­ies explic­itly con­tem­plated in the present inven­tion are pro­vided in fig­ures 1–42 …

where the sec­ond para­graph is taken from the text of the patent. Now you can see how the “every­thing else” por­tion of the patent — in this case the text and draw­ings — help with the inter­pre­ta­tion of the claims.

The Good Bits

So how does this rather long expli­ca­tion of a patent’s two fun­da­men­tal com­po­nents — 1) the claim or claims, and 2) every­thing else — help us under­stand what’s par­tic­u­larly impor­tant about a patent, what part(s) ought be care­fully scru­ti­nized and what part(s) can be safely glossed over?

Part of the answer is that it depends upon why you’re look­ing at the patent in the first place. If you’re look­ing at it as a way of deter­min­ing pos­si­ble infringe­ment, you start with the claim(s). If you’re try­ing to get a cap­sule sum­mary of what the patent pro­tects, once again the claims are the usual place to start.

If, on the other hand, you’re try­ing to get a broader sense of what kind of pro­tec­tion is being granted for a par­tic­u­lar tech­nol­ogy area, and what the state of the art is in that area,4 then you’ll prob­a­bly find less value in the claim(s) — which are, after all, in some sense a sep­a­rate sum­mary lan­guage of what’s in the doc­u­ment as a whole — and more value in a review of the entire document.

“De gustibus non dis­putan­dum est” as the Romans used to say — there’s no right or wrong in mat­ters of taste.

Find­ing Other Fish (Patents)

Per­haps sur­pris­ingly, “De gustibus …” is less applic­a­ble when you’re using a par­tic­u­lar patent or patent appli­ca­tion as an entry point for patent doc­u­ment search­ing. In search­ing you want to use both the claims and the spec­i­fi­ca­tion; but since each is writ­ten in a some­what dif­fer­ent lan­guage, how you use each sec­tion is different.

This should be some­what intu­itively obvi­ous from the sim­ple fact that the claims rep­re­sent a con­den­sa­tion down of what’s writ­ten in the spec­i­fi­ca­tion; the claims have a con­cise­ness that the spec­i­fi­ca­tion doesn’t have. So let’s say you’re doing a key­word search based on key­words that you pull from the claim(s) ver­sus key­words that you take from the rest of the patent doc­u­ment (the spec­i­fi­ca­tion). The claims may be the per­fect place to get use­ful key­words because they’re so con­densed that the words in the claims might tend to be the really impor­tant ones, whereas the spec­i­fi­ca­tion might have enough other stuff in it that it’s hard to select use­ful words from it.

For exam­ple, the spec­i­fi­ca­tion might talk broadly about a new inven­tion for chang­ing light­bulbs, in which case it would prob­a­bly use words like “light­bulb,” “incan­des­cent bulb,” “flu­o­res­cent bulb” etc. Those are good words, but if you searched them you’d find patents that are more likely to be about light­ing itself than about chang­ing the lights.

On the other hand, our hypo­thet­i­cal light­bulb chang­ing patent appli­ca­tion (or issued patent) would prob­a­bly have claims that talk about — at the very least — burned out bulbs, since that’s the essence of a light­bulb chang­ing appa­ra­tus right? And so if we used key­words like “burned out light­bulbs” and searched for that in the claims only, we would be much more likely to pull out on-point patents and patent appli­ca­tions relat­ing to chang­ing light­bulbs rather than mak­ing them.

On the other hand — there’s always an “on the other hand” isn’t there? — an inven­tion on light­bulb chang­ing might have claims that are very detailed in their descrip­tion of the chang­ing appa­ra­tus itself, and they might say very lit­tle if any­thing about the fact that the appa­ra­tus is for chang­ing light­bulbs.5 Such claims would be much less likely to con­tain “burned out light­bulb” type key­words, and would there­fore be harder to find if you were search­ing those terms or — in terms of key­word selec­tion — would be mis­lead­ing if you picked key­words from them based on their claims.

So there’s always a bal­ance to be struck between pick­ing key­words from the claim(s) ver­sus from the spec­i­fi­ca­tion; and search­ing key­words that occur only in the claims, while use­ful in terms of lim­it­ing down the num­ber of hits, often fails to pick up doc­u­ments that are relevant.

Clear enough? Per­haps, but once again the best thing to do is to give some exam­ples. Stay tuned for the next post, where I’ll do just that.

In US patent law this hap­pens when the pre­am­ble, for exam­ple, “breathes life and mean­ing” into the claim. [↩]

A bit of pedantry: “fish” is either a sin­gle fish or mul­ti­ple fish of the same species, whereas “fishes” refers to more than one fish of dif­fer­ent species. So fish have more or less the same bits (apart from nat­ural vari­a­tion and sub­trac­tions of parts by acci­dents), whereas fishes — being dif­fer­ent species — likely have dif­fer­ent bits. More than you wanted to know, I’m sure. [↩]

Note that patent doc­u­ments don’t become pub­lic until at least 18 months after their ear­li­est fil­ing date. Thus no mat­ter how thor­oughly you look at issued patents and pub­lished patent appli­ca­tions, you’ll never see doc­u­ments still within this 18 month win­dow. [↩]

Remem­ber that the pre­am­ble doesn’t usu­ally get rolled into the mean­ing of the claim, so the pre­cise lan­guage of the pre­am­ble can be rather wig­gly (an IP person’s term of art). [↩]